Ex Parte IzutsuDownload PDFPatent Trial and Appeal BoardMar 21, 201613459646 (P.T.A.B. Mar. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/459,646 04/30/2012 513 7590 03/23/2016 WENDEROTH, LIND & PONACK, LLP, 1030 15th Street, N.W., Suite 400 East Washington, DC 20005-1503 FIRST NAMED INVENTOR Masahiro IZUTSU UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 2012_0661 6196 EXAMINER SHIN, CHRISTOPHER B ART UNIT PAPER NUMBER 2181 NOTIFICATION DATE DELIVERY MODE 03/23/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ddalecki@wenderoth.com eoa@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIRO IZUTSU Appeal2014-003057 Application 13/459,646 Technology Center 2100 Before MAHSHID D. SAADAT, CATHERINE SHIANG, and KAMRAN JIVANI, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 6-8, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Introduction The present invention relates to a mobile information communication apparatus. See generally Spec. 1. Claim 6 is exemplary: Appeal2014-003057 Application 13/459,646 6. An automobile comprising: a dashboard; a display unit attached to said dashboard; and a cradle attached to said dashboard and configured to hold mobile information and communication apparatus; wherein said cradle has a first interface device for receiving a display signal from the mobile information and communication apparatus held by said cradle, and for transmitting the received display signal to said display unit; and wherein said display unit has a second interface device for receiving the display signal transmitted by said first interface device, said display unit being configured to display an image according to the received display signal. References and Rejections MIMRAN US 7,053,866 Bl May 30, 2006 Claims 6-8 stand rejected under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under U.S.C. § 103(a) as being obvious over Mimran. 2 Appeal2014-003057 Application 13/459,646 ANALYSIS 1 We have reviewed Appellant's arguments in the Briefs, the Examiner's rejection, the Examiner's response to Appellant's arguments, and the evidence of record. We concur with Appellant's conclusion that the Examiner erred in finding Mimran teaches "wherein said cradle has a first interface device for receiving a display signal from the mobile information and communication apparatus held by said cradle, and for transmitting the received display signal to said display unit," as recited in independent claim 6 (emphases added). The Examiner maps the claimed "cradle" to Mimran' s cradle members 19a and 19b. See Final Rej. 3; Ans. 7.2 The Examiner then maps Mimran' s adaptor 10 to the claim element "a first interface device." See Ans. 7. Appellant correctly argues-and the Examiner does not dispute-that Mimran's adaptor 10 is adapted to connect to a peripheral device (such as a 1 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 2 In response to Appellant's arguments, the Examiner finds Mimran' s cradle members 19a and 19b inherently hold a cradle. See Ans. 3-5. Inherency can only be established when "prior art necessarily functions in accordance with, or includes, the claimed limitations." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Contrary to the Examiner's unsupported finding, the cited Mimran portions do not necessarily teach a cradle being held by cradle holding members 19a and 19b. As pointed out by Appellant, Mimran merely states: "Arm rest 18 includes a pair of cradle holder members l 9a and l 9b for holding and storing various [devices.]" Mimran 4:38--40 (emphasis added); see also App. Br. 3. That sentence constitutes the only detailed description of the cradle holder members 19a and 19b in the entire Mimran reference. 3 Appeal2014-003057 Application 13/459,646 cell phone) on one end, and a heads up display (HUD) unit 20 on the other end. See App. Br. 3; Mimran Figs. 1, 4; 2:54-63; 4:4:49-59. Therefore, Mimran's adaptor 10 is not connected to Mimran's cradle members 19a and 19b. See App. Br. 3--4. In fact, the Examiner does not assert such connection exists. Therefore, under the Examiner's mapping, the claimed "cradle" is not connected to the claimed "first interface." As a result, the Examiner fails to show "said cradle has a first interface device for receiving a display signal from the mobile information and communication apparatus held by said cradle, and for transmitting the received display signal to said display unit," as required by the claim (emphases added). See App. Br. 3--4. Because the Examiner fails to provide sufficient evidence to support the rejection, we are constrained by the record to reverse the Examiner's rejection of claim 6, and claims 7-8 for similar reasons. DECISION The Examiner's decision rejecting claims 6-8 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation